USPTO Patents Application 10796814

05/1^005 10:16 FAX 520 623 241$

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Quarles & Brady - TUC

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Facsimile Transmission Form

Attorneys at Law In
Milwaukee and Madison, Wisconsin
Naples and Boca Raton, Florida
Phoenix and Tucson, Arizona
Chicago. Illinois (Queries & BradyLLC)

RECEIVED

CENTRAL FAX CENTER

MAY 1 3 2005

Date: May 13, 2005

To:

Fax No.

Phone No.

Name William T. Leader

Technology Center 1700, Art Unit 1742
U.S. Patent and Trademark Office

703-872-9306

From:

Gavin J. Milczarek-Desai

520-770-2235

520-770-6716

Re:

APPLICANT: M. Michael Pitts. Jr. et al. DOCKET NO.: 111732.00012

SERIAL NO.: 10/796,814 EXAMINER: William T. Leader

FILED: March 9, 2004 ART UNIT: 1742

TITLE: CAPACniVE ELECTROSTATIC PROCESS FOR INHIBITING THE FORMATION
OF BIOFILM DEPOSITS IN MEMBRANE-SEPARATION SYSTEMS

Attachment(s): Transmittal of Terminal Disclaimer

Terminal Disclaimer signed by attorney of record

If you have problems receiving this facsimile, please call us immediately at:

520-770-8741

No. of Pages (Including Cover): 4

Job Code:

Client -Matter No.: 111732.00012

TimeKeeoer GMILCZAR

Recipient

Return To: Alice Vanicek

Reauestor Name: Alice Vanicek

Phone No.: 520-770-8741

IMPORTANT: THIS MESSAGE IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHICH IT IS ADDRESSED AND MAY
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05/13/2005 10:16 FAX 520 623 2418 Quarles & Brady - TUC @]002

CENTRAL FAX CENTER

MAY 13 2005

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANT: M. Michael Pitts, Jr. et al. DOCKET NO.: 111732.00012

SERIAL NO.: 10/796,814 EXAMINER: William T. Leader

FILED: March 9, 2004 ART UNIT: 1742

TITLE: CAPACITTVE ELECTROSTATIC PROCESS FOR INHIBITING THE FORMATION
OF BIOFILM DEPOSITS IN MEMBRANE-SEPARATION SYSTEMS

Mail Stop Amendment Antonio R. Durando

Commissioner for Patents Quarles & Brady Streich Lang

P.O. Box 1450 One South Church Avenue, Suite 1700

Alexandria, VA 22313-1450 Tucson, AZ 85701

CERTIFICATE OF TRANSMISSION

I hereby certify that on this of May , 2005, this correspondence is being transmitted

to the attention of Examiner William T. Leader, via facsimile (703-872-9306) to the U.S. Patent
and Trademark Office, Patent Technology Center 1700, Art Unit 1742 .

By: fifaZlS-

Alice B. Vanicek

TO THE COMMISSIONER FOR PATENTS
Transmittal of Terminal Disclaimer

Dear Sir:

Further to applicant's Supplementary Response and petition for three-months extension of time
filed on May 10, 2005, and in response to the communication dated May 9, 2005, from Examiner
Leader stating the reply filed on March % 2005, is not fully responsive to the prior Office Action,

1

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05/1V2005 10:16 FAX 520 623 2416

Quarles & Brady - TUC

@0O3

SM 10/796,814

Art Unit 1742

attached is a Terminal Disclaimer signed by the undersigned attorney, who is of record in the
subject application

A fee authorization form for the terminal disclaimer fee under 37 CFR 1 -20(d) was submitted in the
previous Response. A petition for a 3-month extension of time was submitted with the
documents filed May 10, 2005. Should there be any additional or unforeseen costs, please charge
our Deposit Account No. 17-0055.

Respectfully submitted,

Quarles & Brady Streich Lang LLP

Antomo R. Durando
Reg. No. 28,409

520 770-8700 Telephone
520 623-2418 Fax

2

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05/1<0^2005 10:16 FAX 520 623 2418 Quarles & Brady - TUC RECEIVED ® 004

J"' CENTRAL FAX CENTER

r"^" 4 MAY 1 3 2005

PTO/SB/ZQ (09-04)

Approved tor use mrougn 07fti«00e. omb 0651-C031

U.S. PaieMand Traoemark Office; U.S. DEPARTMENT OF COMMERCE
Ifndar the Paperwork Reduction Act of 1 995. no persons are reqirirad to respond to a collection of hfannaUon unless It daptaya a vald OMB control number.

TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTINQ
REJECTION OVER A "PRIOR" PATENT

Docket Number (Optional)
111732.00012

bi re Application of: M. Michael PiBs, Jr. end Rodrigo F.V. Roroo
AppliwfonNg.: 10/796.814
Red: March 9, 2004

p or Copaoitive Electrostatic Process for Inhibiting the Formation of Bioffim Deposits in Membrene-SepeFstion Systems

The owners rvLMchaei Pitta Jr. end Rodrioo F.V. Romo of 1DQ percent Interest In the Instant application hereby disclaims,
except as provided below, trig terminal pert of the statutory term of any patent granted on the Instant application which would extend beyond

the expiration data of the full statutory term prior patent No. 5.591.317 ss the term of said prior patent ia defined In 35 U.S.C. 154

and 173, and as the term of said prior patent Is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so
granted on the instant application shall be enforceable only for and during such period that ft end the prior patent ere commonly owned. This
agreement runs with any patent granted on the Instant application and Is binding upon the grantee. Hs successors or assigns.

In making the above disclaimer, the owner does not disclaim the terminal part of (he term of any patent granted on the instant appicaton that
would extend to the expiration dale of the full statutory term as defined in 35 U.8.C. 1 54 and 173 of the prior patent, "as the term of said prior
patent is presently shortened by any terminal disclaimer." in the event that said prior patent later:

expires fw failure to pay e maintenance lee;

is held unenforceable;

is found invalid by a court of competent jurisdiction;

is statutorily disclaimed in whole Or terminally disclaimed under 37 CFR 1.321;
has all claims canceled by a reexamination certificate;
is reissued; or

is in any manner terminated prior to the expiration of its run statutory term as presently shortened by any termjnel disclaimer.
Check either box 1 or 2 below, if appropriate.

1. For submissions oh behalf of a business/organization (e.g., corporation, partnership, university, government agency,
etc.). the undersigned Is empowered to act on behairof the business/organization.

I hereby declare that afl statements made herein of my own knowledge are true and that an statements made on information and
belief are believed to be true: and further that these statements were made with the knowledge that willful false statements and the llxe so
made are punishable by fine or imprisonment, or both, under Section 1001 of Title 16 of the United Stales Code end that such willful false
statements may jeopardize the validity of the eppficstion or eny patent issued thereon.

2.0 The undersigned Is an attorney or agent of record. Reg. No. 26,409

JlA-JX-X^ cl 3 May 12, 2003

Signature Date
Antonio R, Durando

Typed or printed name

520-770-8700

Telephone Number

0 Terminal disclaimer fee under 37 CFR 1 -20(d) Included Fleas e charge the terminal disclaimer fee
of $65-00 (small entity) to Deposit Account No. 17-0055.
WARNING: Information on this form may become public Credit card Information should not
be Included on this form. Provide credit card Information and authorization on PTO-2038.

"Statement under 37 CFR 3.73(b) is required if terminal disclaimer Is signed by the assignee (owner).
Form PTO/SB/96 may be used for making this cenificailon. See MPEP § 324.

This collection of information is required by 37 CFR 1 .321 . The information i$ nequ*ed to Obtain or retan a benefit by the pubic which is to 61a (and by the USPTO
to process) an appficaUon. Confidentiality m governed by 35 U.S.C 122 and 37 CFR 1.11 end 1.14. This collection Is estimated to take 12 minutes to complete,
including gathering, preoarthg, and submitting me completed application farm to me USPTO. Time wW very depending upon the 'mdMduai cue. Any comments
on the amount of time you require to complete this form and/or suggestions for reducing (his burden, should be sent to the Chief Information Officer, U.S. Patent
and Trademark Office. U.S. Department of Commerce. P.O. Box 1450, Alexandria, VA 2231 $-1450. DO MOT SEND FEES OR COMPLETED FORMS TO THIS
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tf you need assistance In completing the farm, call 1-800-PTO-91 99 end select opUcn 2.

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